chnologies, Inc., IPR2018-00752, 2018 WL 4373643 (P.T.A.B. Sept. 12, 2018) (designated precedential on May 7, 2019), and Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495 (P.T.A.B. Mar. 20, 2020) (designated precedential on May 5, 2020). The lawsuit challenged the precedential designation on three grounds: (1) that the Director acted contrary to the IPR provisions of the patent statute — see 5 U.S.C. § 706(2)(C) (the Administrative Procedures Act (APA)); (2) that the Fintiv rule was arbitrary and capricious — see 5 U.S.C. § 706(2)(A); and (3) that the Fintiv rule was issued without compliance with the notice-and-comment rulemaking requirements of 5 U.S.C. § 553 and by 35 U.S.C. § 316. The U.S. Department of Justice moved to dismiss the lawsuit on the basis that plaintiffs lacked standing and, in the alternative, that APA review was unavailable both because (1) statutes precluded judicial review and (2) the challenges are to agency action committed to agency discretion by law, 5 U.S.C. § 701(a)(1)-(2). The district court dismissed the lawsuit on November 10, 2021, concluding that plaintiffs had standing but their challenges were to Director actions that were not reviewable based in part upon 35 U.S.C. § 314(d) (The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable).The Federal Circuit held that plaintiffs’ first two challenges (urging that the Fintiv rule violates the IPR statute and is arbitrary and capricious), were properly dismissed under § 701(a)(1) in that the challenges are to agency action committed to agency discretion by law. Regarding the plaintiffs’ third challenge that the Fintiv rule was issued without compliance with the notice-and-comment rulemaking requirements, the Federal Circuit determined that the APA’s procedural requirements are enforceable apart from the reviewability of the underlying action and that the government did not present a persuasive justification for concluding that t

The Federal Circuit considered whether it was within the Board’s discretion to deny Honeywell’s request for permission to move for leave to petition the Director on the basis that Honeywell had not met the requirements of § 255. The Court first rejected Arkema’s argument that the Board’s decision was unreviewable as an agency action committed to agency discretion by law under 5 U.S.C. 701(a)(2), stating that § 701(a)(2) only applies in the rare instance where an authorizing statute is so broadly written that there is no law to apply.The Court then recounted that to correct a patent subject to PGR proceedings the patentee must seek authorization from the Board to file a motion, if granted, the patentee moves the Board for leave to petition the Board, and if granted, the patentee petitions the Director for a Certificate of Correction.

Where the Communications Act or the Commission’s rules are unclear, or do not address a particular situation, [USAC] shall seek guidance from the Commission.”).294. See Government Organization and Employment Act, Pub. L. No. 89-554, 80 Stat. 378 (1966) (codified at 5 U.S.C. §§ 701-706 (2012)). 295. 5 U.S.C. § 551(13) (2012) (defining “agency action” as “the whole or a part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof, or failure toact”); see also Eric Biber, Two Sides of the Same Coin: Judicial Review of Administrative Agency Action and Inaction, 26 VA. ENVTL. L.J. 461, 464 (2008) (stating that the APA sets out a broad scope of judicial review of agency decisions).

The Ninth Circuit affirmed. In granting certiorari, the Supreme Court limited review to two issues: (1) whether the Administrative Procedure Act, 5 U.S.C. Section 701. et seq (APA) provides for pre-enforcement judicial review; and (2) if the APA does not provide for pre-enforcement judicial review, whether denial of pre-enforcement judicial review violates due process. Section 704 of the APA provides for judicial review of agency action “made reviewable by statute and final agency action for which there is no other adequate remedy in a court.”

ce’s treatment of 35 U.S.C. § 314(d). Section 314 provides the USPTO Director with complete discretion to deny an IPR petition through the intersection of two provisions. First, the statute does not expressly require institution under any circumstance. Rather, it sets the reasonable-likelihood of success as a minimum threshold for granting institution. Second, the statute indicates that the decision of whether to institute is non-appealable.A group of companies led by Apple sued the Patent Office in the Northern District of California, arguing that discretionary denials violate the APA. Apple and its co-plaintiffs identified their common interest as defendants who regularly face patent infringement allegations. As such, they argue that they are harmed by the Patent Office’s arbitrary and capricious discretionary denial practice, which deprives petitioners of a regular and predictable mechanism for invalidating claims at the Patent Office.The district court dismissed the APA case under 5 U.S.C. § 701(a)(1), finding that the Patent Office’s discretionary denial practice was within the inevitable and congressionally expected delegations of power. The Federal Circuit largely affirmed that finding on appeal, though it agreed with Apple that “the Director was required, by 35 U.S.C. § 116 together with 5 U.S.C. § 553, to promulgate the institution instructions through notice-and-comment rulemaking procedures,” and failed to do so. Apple has filed a petition for writ of certiorari challenging the Federal Circuit’s affirmance. Meanwhile, Director Vidal has drafted an Advance Notice of Proposed Rulemaking (ANPRM) for potential PTAB reforms that place limits on discretionary denials. These limits fall short of what Apple has argued are appropriate, but may nonetheless comply with the Federal Circuit’s remand instructions, pending intervention from the Supreme Court. Either way, the process and outcome of this new notice and comment period will only further highlight the importance of Patent Offic

ffs identified their common interest as defendants who regularly face patent infringement allegations. As such, they argued that they are harmed by the Patent Office’s arbitrary and capricious discretionary denial practice, which deprives petitioners of a regular and predictable mechanism for invalidating claims at the Patent Office. While their challenge has largely been unsuccessful so far, it has spurred new notice-and-comment rulemaking procedures limiting discretionary denials.Section 314 provides the USPTO Director with complete discretion to deny an IPR petition through the intersection of two provisions. First, the statute does not expressly require institution under any circumstance. Rather, § 314(a) sets the reasonable-likelihood of success as a minimum threshold for granting institution. Second, § 314(d) of the statute indicates that the decision of whether to institute is non-appealable.The district court dismissed the APA case for lack of subject-matter jurisdiction under 5 U.S.C. § 701(a)(1), which precludes APA suits where “statutes preclude judicial review.” The court concluded that, to rule onApple’s challenges, it “‘would have to analyze questions that are closely tied to the application and interpretation of statutes governing’ institution decisions,” and therefore that review of these challenges was foreclosed under Cuzzo Speed Technologies, LLC v. Lee, 579 U.S. 261 (2016), and Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020).The Federal Circuit largely affirmed that finding on appeal, holding that the substance of the Director’s institution instructions were unreviewable. The court did, however, agree with Apple that the district court had jurisdiction to hear its argument “that the Director was required, by 35 U.S.C. § 116 together with 5 U.S.C. § 553, to promulgate the institution instructions through notice-and-comment rulemaking procedures.” The court remanded so the district court could consider this argument on the merits.Apple has filed

ce] could be read to allow for a compelling merits determination as a substitute for a Fintiv analysis, that was not my intent. By that instruction, I intended for PTAB panels to only consider compelling merits if they first determined that Fintiv factors 1-5 favored a discretionary denial.” Id. The decision instructed that in assessing compelling merits, “the Board must provide reasoning sufficient to allow the parties to challenge that finding and sufficient to allow for review of the Board’s decision.” Id. at 5. In the decision, Director Vidal also stated that a compelling merits standard is higher than the likelihood of success standard required by the Patent Act for PTAB challenges. Id. at 3. The outcome of this remand, however, is unclear. The criteria for denying institution of inter partes review may be subject to change as a result of the Federal Circuit’s recent decision in an action brought against the Director in district court under the Administrative Procedure Act (APA), 5 U.S.C. §§701–06. Apple Inc. v. Vidal, No. 2022-1249, 2023 WL 2469635 (Fed. Cir. Mar. 13, 2023). The action challenged Director Vidal’s June 2022 guidance issued to the Board to inform it how to exercise discretion as to whether to institute a requested IPR. Id. at *1. The district court granted the government’s motion to dismiss, finding that the Director’s actions were not reviewable. Id. The Federal Circuit reversed, holding that plaintiffs’ challenge arguing that the Director’s instructions had improperly been issued without notice-and-comment rulemaking as required under 5 U.S.C. §553 was reviewable under the APA. Id.Takeaway:As the guidance currently stands, Director Vidal’s guidance allowing the PTAB to institute inter partes review even if the Fintiv factors favor denial does not mean that the Fintiv analysis becomes moot. Notably, Director Vidal’s comments confirm that the standard is high to overcome the other Fintiv factors based on the merits. These standards may change if the parties are

l Circuit noted that “the Director must be able to give guidance in the form of instructions to her delegate(s)—the Board )or Board panels)—about how to make the institution determinations on her behalf” and “[i]f the congressional preclusion of review of the decision to institute is to be respected in the inevitable system of delegation, it must extend to the substance of such instructions.” Id. at 17-18.The Federal Circuit reversed the dismissal of the plaintiffs’ third challenge, which asserted that the Director failed to properly issue the institution instructions through notice-and-comment rulemaking procedures. Id. at 19. The court highlighted that the government did not show “that anything in § 314(d) or elsewhere in the IPR statute supplies clear and convincing evidence that there was to be no judicial review of the choice of announcement procedure.” Id. at 20. Furthermore, the court stated that there was “no sufficient justification for a conclusion that the high standard of [5 U.S.C.] § 701(a)(2) for inferring a preclusion of review is met for this distinct issue” and there was no “persuasive justification for concluding that the use or non-use of notice-and-comment rulemaking procedures is a matter ‘committed to agency discretion by law.” Id.

the Commission issued an order requesting further briefing in order to develop a more complete record to better determine whether PG&E's proposed replacement agreements are just and reasonable. On November 21, 2019, the Commission issued Opinion No. 568, which affirmed in part and overturned in part, an its initial decision in City and County of San Francisco v. Pac. Gas & Elec. Co., 157 FERC 63,021 (2016) which deals with issues surrounding the grandfathering of San Francisco's customers to receive wholesale distribution service under the PG&E wholesale distribution tariff. On December 20, 2019, San Francisco filed a request for rehearing of Opinion No. 568, which on June 4, 2020 the Commission denied in part and granted in part. On August 5, 2020, San Francisco filed notice that it was seeking review of Opinion No. 568 and the June 4 Rehearing Order on the grounds that they are arbitrary, capricious, and an abuse of discretion within the meaning of the Administrative Procedure Act, 5 U.S.C. §§ 701–706; violate federal law, including the FPA; and are otherwise contrary to law. The petition for review filed at the United States Court of Appeals for the District of Columbia Circuit (D.C. Circuit) culminated in a decision that did not affirm the prior orders by the Commission, and consequently, the Commission applied the reasoning and precedent instructed by the D.C. Circuit in issuing an order on remand on October 20, 2022. The order on remand stated that San Francisco's customer class-based interpretation of the WDT's reference to section 212(h)(2) is consistent with that precedent, and accordingly, that San Francisco's loads within the customer classes served on October 24, 1992, are entitled to grandfathered service under the WDT. The order on remand also directed PG&E to submit revised WDT provisions. On November 21, 2022, PG&E filed a request for rehearing of the October 20 order on remand. Agenda item E-7 may be an order on the request for rehearing by PG&E.E-8 – Iowa Coalition

g to Buch, J.Judges Urda, Jones, Toro, and Greaves agreed with Buch, J.’s dissent.Judge Pugh’s Dissent. Judge Pugh provided an additional 1-page dissent. Pugh, J. likewise leaned on the “blocked income” theory and “stare decisis” approach based on Commissioner v. First Security Bank of Utah, N.A., 405 U.S. 394, 407 (1972) and the Tax Court’s application of First Security Bank in Procter & Gamble Co. v. Commissioner, 95 T.C. 323, 336 (1990), that is, First Security Bank was controlling and therefore “section 482 simply does not apply” to reallocate income that a Spanish subsidiary could not pay under Spanish law. See Procter & Gamble Co., 95 T.C. at 336, aff’d, 961 F.2d 1255 (6th Cir. 1992).Judges Foley, Buch, Urda, and Toro agreed with Pugh, J.’s dissent.Judge Toro’s Dissent. Judge Toro provided a 40-page dissent. Toro, J. opined that the Department of the Treasury and the IRS failed to comply with procedural requirements of the Administrative Procedure Act (APA), 5 U.S.C. §§ 551–559, 701–706, in promulgating Treasury Regulation § 1.482-1(h)(2) (2006). Toro, J. noted, in part: “When it adopted Treasury Regulation § 1.482-1(h)(2), Treasury offered no explanation for its choices with respect to the rule. Not a single sentence. Treasury did not explain why a revision to the existing rule was needed. . . . Providing reasons for Treasury’s proposed approach was particularly important here, where several prior judicial decisions, including a Supreme Court decision, had rejected the approach Treasury adopted.”Judges Buch, Urda, Jones, Greaves, and Weiler agreed with Toro, J.’s dissent.Key Points of Law:COMMENT 1: Inasmuch as the 346-page opinion (including concurrences and dissents) addresses multiple iterations of the Code sections in issue, Treasury Regulations that have changed over time, and Brazilian laws in effect and repealed, this blog contains but a snippet of legal principles addressed in the monster opinion. Reference is made to the opinion itself for further and detai